WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently pending petitions, organized in reverse chronological order by date of certiorari petition.

OIP Technologies, Inc. v Amazon, Inc., No. 15-642

Questions Presented:

  1. Whether all methods that improve existing technological processes are equally eligible for patent protection under 35 U.S.C. § 101, and the Federal Circuit erred by distinguishing a method of testing demand to improve a pricing process from Diehr’s method of testing temperature to improve the timing of a rubber curing process by finding that only the business-related process was ineligible.
  2. Whether a court may grant a motion to dismiss a patent infringement suit for failure to claim patent-eligible subject matter under 35 U.S.C. § 101 based on factual determinations that are inconsistent with the facts in the complaint, notwithstanding the requirement of Federal Rule of Civil Procedure 12 that all facts in the complaint be taken as true.

Cert. petition filed 11/12/15.

CAFC OpinionCAFC Argument

ePlus, Inc. v. Lawson Software, Inc., No. 15-639

Questions Presented:

Following a jury trial, the district court permanently enjoined respondent Lawson Software, Inc., from infringing patent claims owned by petitioner ePlus, Inc. Lawson then abandoned its challenge to the validity of the key patent claim (claim 26). The Federal Circuit affirmed the judgment that Lawson infringed claim 26, and it upheld the injunction; it reversed with respect to some other patent claims.

Lawson flagrantly violated the injunction, and after a hearing, the district court entered an order of civil contempt. While Lawson’s second appeal was pending, the U.S. Patent and Trademark Office cancelled claim 26 based on an invalidity ground that Lawson had not pursued in litigation. A divided Federal Circuit panel held that the cancellation order retroactively invalidated the contempt judgment.

The questions presented are as follows:

  1. Whether civil contempt of a permanent injunction order that has been affirmed on appeal and is binding on the litigants under the law of judgments, may be set aside based on a legal development that came after both the permanent injunction and the contumacious conduct, and that did not call into question the correctness of the injunction when it was entered.
  2. Whether, under Plaut v. Spendthrift Farm, Inc., 514 U.S. 211 (1995), the PTO, an administrative agency, may issue an order that retroactively overrides a federal court’s judgment on a question of law that is not subject to further judicial review, so long as some other part of the litigation is pending.

Cert. petition filed 11/13/15.

CAFC OpinionCAFC Argument

Innovention Toys, LLC v. MGA Entertainment, Inc., No. 15-635

Questions Presented:

  1. Whether the Federal Circuit erred by applying a rigid, two-part test for willful patent infringement and the enhancement of damages under 35 U.S.C. § 284, which is the same rigid, two-part test this Court rejected in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) for an award of attorney fees under 35 U.S.C. § 285, a statute with very similar wording as Section 284.
  2. Whether a district court has discretion to enhance damages under 35 U.S.C. § 284 (similar to the “exceptional case” abuse-of-discretion standard for 35 U.S.C. § 285, as set forth in Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014)), where the infringer, one of the world’s largest toy companies, intentionally copied the patented game of a competitor, a small three-person toy company, and made no attempt to avoid infringement of the smaller company’s valid patent.

Cert. petition filed 11/10/15.

CAFC OpinionCAFC Argument

Biogen MA, Inc. v. Japanese Foundation for Cancer Research, No. 15-607

Question Presented:

Whether the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), eliminated federal district courts’ jurisdiction over patent interference actions under 35 U.S.C. § 146.

Cert. petition filed 11/9/15.

CAFC OpinionCAFC Argument

Morgan v. Global Traffic Technologies LLC, No. 15-602

Questions Presented:

As a case of first impression, does the procedure required when a patent, cited as prior art in and accused of infringing a subsequently issued patent, include construction of the scope of the claims of the subsequent patent in light of the prior patent plus comparison of differences between the accused device and the one claimed?

Does the standard set forth in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) apply retroactively in this case, pending on appeal when Teva was decided?

Cert. petition filed 11/5/15.

CAFC OpinionCAFC Argument

STC, Inc. v. Global Traffic Technologies LLC, No. 15-592

Question Presented:

Whether marking the packaging of a patented article with patent notification satisfies the marking provision of 35 U.S.C. § 287(a) where the patented article itself is undisputedly capable of being marked.

Cert. petition filed 11/5/15.

CAFC OpinionCAFC Argument

Retirement Capital Access Management Co. LLC v. U.S. Bancorp, No. 15-591

Questions Presented:

In 2011, Congress enacted the Leahy-Smith America Invents Act (hereinafter “AIA” or “the Act”), Pub. L. No. 112-29, 125 Stat. 284 (2011). The Act created three new post-grant administrative proceedings for challenging the validity of patents. It also created within the Patent and Trademark Office (“PTO”) a new tribunal called the Patent Trial and Appeal Board (hereinafter the “Board”) to preside over these new proceedings. One of the newly created proceedings is the transitional post-grant review, also known as “covered business method” or “CBM” review, for patents directed to a financial product or service. The AIA limits the Board’s jurisdiction with respect to CBM review to challenges based on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. § 282(b). Paragraph 2 provides that a party may seek to invalidate a patent or claim on any ground specified in part II of Title 35 as a condition for patentability.

The questions presented arise from the Federal Circuit affirming, without comment, the Board’s holding that 35 U.S.C. § 101 is a ground specified in part II of Title 35 as a condition for patentability and therefore constitutes a proper basis for review in a CBM proceeding, and from the Federal Circuit affirming the Board’s application of § 101 to the patent claims at issue. They are:

  1. Whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2).
  2. Whether the Board errs when it invalidates issued patent claims posing no risk of preemption under the abstract idea exception to patent eligibility.

Cert. petition filed 11/5/15.

CAFC OpinionCAFC Argument

Allergan plc v. State of New York, No. 15-587

Questions Presented:

Brand drug manufacturers seeking to market a new prescription drug must undergo a long and expensive process to obtain FDA approval. Under the 1984 Drug Price Competition and Patent Term Restoration Act, better known as Hatch-Waxman, generic drug manufacturers can obtain FDA approval for a “bioequivalent” generic drug more easily, by piggy-backing on the brand’s approval efforts. Once the brand drug’s patent and other exclusivities expire and generic versions enter the market, state drug substitution laws permit or require pharmacists to dispense lower-priced, therapeutically equivalent generic drugs in place of brand drugs, unless the prescriber directs otherwise. Under most (but not all) states’ definitions of therapeutic equivalence, however, pharmacists may not substitute a generic drug that has a different dose than the prescribed brand without the physician’s approval.

The Second Circuit held below that brand drug manufacturers have a federal antitrust duty to facilitate the operation of state drug substitution laws so as to maximize the future sales of their generic competitors. Petitioners are a brand drug manufacturer and its subsidiary, who sought to exercise their rights under the Patent Act to limit distribution of an outdated version of their patented Alzheimer’s drug in favor of an innovative new formulation with different dosing and longer patent protection. The Second Circuit held that so doing would violate section 2 of the Sherman Antitrust Act because it would reduce the number of prescriptions most state substitution laws would automatically hand over to Petitioners’ generic rivals once the old drug’s exclusivities ended.

The questions presented are:

  1. Whether exercising rights granted by the Patent Act—in particular, not selling one patented product and selling a different patented product instead—can violate the Sherman Antitrust Act?
  2. Whether drug manufacturers have a federal antitrust duty to facilitate the operation of state drug substitution laws to maximize competitors’ sales?

Cert. petition filed 11/4/15.

CA2 Opinion, No CA2 Argument

Apls South, LLC v. The Ohio Willow Wood Company, No. 15-567

Questions Presented:

This case presents three related questions for review:

  1. When post-complaint events establish plaintiff’s prudential standing, may plaintiff cure a prudential standing defect existing when the original complaint was filed by filing a supplemental complaint in accordance with Fed. R. Civ. P. 15(d), or must it file a new case to assert its claim for relief?
  2. If a district court exercises its discretion to allow a supplemental complaint pursuant to Fed. R. Civ. P. 15(d), does the supplemental complaint become the operative complaint from which plaintiff’s prudential standing to bring the action is determined?
  3. Where an exclusive licensee acquires all substantial rights in a patent after bringing an infringement action, and it files a supplemental complaint, pursuant to Fed. R. Civ. P. 15(d), after acquiring those rights, does the exclusive licensee have prudential standing to proceed with a patent infringement action in only its name, when it did not own all substantial rights in the patent when it originally brought the infringement action?

Cert. petition filed 10/29/15.

CAFC OpinionCAFC Argument

Nautilus, Inc. v. Biosig Instruments, Inc., No. 15-561

Questions Presented:

The Patent Act’s particular-and-distinct claiming mandate gives innovators the reasonable certainty they need to invent confidently near a patent claim’s boundary, but not over it. See 35 U.S.C. § 112, - 2 (2006 ed.). To perform this public-notice function, a patent claim must be clear the day it issues. This Court accordingly rejected the Federal Circuit’s post hoc “amenable to construction” standard: “It cannot be sufficient that a court can ascribe some meaning to a patent's claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 (2014). But, the remand panel again did the opposite. It copied and pasted much of its opinion this Court had vacated. It did not even mention the original prosecution history. Instead, it again viewed the claim post hoc in view of statements made in Patent Office proceedings 15 years after the patent issued. And, it again relied upon a purely functional distinction over a structurally identical prior-art design as supposedly providing sufficient clarity.

The questions presented are:

  1. Is a patent claim invalid for indefiniteness if its scope is not reasonably certain the day the patent issues, even if statements in later Patent Office proceedings clarify it?
  2. Is a patent claim invalid for indefiniteness if its scope is distinguished from prior art solely by a functional requirement, rather than by any structural difference?

Cert. petition filed 10/30/15, waiver of respondent Biosig Instruments, Inc. filed 11/5/15, conference 11/24/15.

CAFC OpinionCAFC Argument

Arthrex, Inc. v. Smith & Nephew, Inc., No. 15-559

Question Presented:

To be liable for induced or contributory patent infringement, a defendant must “know” that the conduct it induced or contributed to constitutes infringement of a patent. Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1928 (2015). That knowledge requirement (and its equivalent, “willful blindness”) is stringent, “surpass[ing] recklessness and negligence.” Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2070 (2011). In Safeco Insurance Co. of America v. Burr, 551 U.S. 47 (2007), this Court held that a defendant does not commit a violation “knowingly” or “recklessly” if its actions are consistent with an understanding of legal requirements that was “not objectively unreasonable,” “whatever [its] subjective intent may have been.” Id. at 70, n.20. The question presented is:

Whether a defendant may be held liable under a “knowledge” standard where its actions were consistent with an understanding of relevant legal requirements that was not objectively unreasonable.

Cert. petition filed 10/30/15.

CAFC OpinionCAFC Argument

Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538

Questions Presented:

  1. Do patent claims addressed directly to software that is inherently in a computer-readable medium qualify as a “manufacture” under 35 U.S.C. § 101 without express recitation of the medium?
  2. Does a district court abuse its discretion when it refuses to consider evidence of patent infringement as described in a patentee’s infringement contentions on the ground that those contentions did not refer to the specific part of the accused product corresponding to a particular claim element by name when (a) the accused infringer never objected to the adequacy of the disclosure, (b) the patentee nevertheless identified the specific part by name during discovery, and (c) there is no reason, such as bad faith or prejudice to the accused infringer, for excluding the evidence as a sanction?

Cert. petition filed 10/23/15.

CAFC OpinionCAFC Argument